Background
In October 2022, Mr. Aslan travelled from Turkey to Germany. Upon his arrival in Germany, customs officials discovered 22 counterfeit items in his luggage, all bearing Off-White trade marks:
The items were confiscated by officials and subsequently ordered to be destroyed.
Mr. Aslan contested the destruction of the goods, resulting in the dispute being brought before the District Court of The Hague.
Reasoning
Article 9(2)(a) EUTMR inter alia allows trade mark holders to prohibit unauthorized third parties from using identical signs for identical goods or services in trade.
Aslan’s main argument was that there had been no use within the meaning Article 9(2)(a) EUTMR because the goods were for his own use and therefore there had been no use within the meaning of the said provision.
Off-White submitted that there had been “use in the course of trade,” citing the quantity and amount of counterfeit garments. They estimated the market value of original Off-White items to be around $11,700. Off-White also claimed that batches of this sizes were commonly resold on platforms like Marktplaats, Instagram, and Facebook.
In view of the above and the evidence submitted before the court, Off-White had not sufficiently substantiated that there had been use (or threat of use) in the course of trade within the meaning of Article 9 EUTMR. The finding of 22 items of clothing in a person’s personal luggage does not automatically prove an intention to commercialize or keep a stock with the aim of selling or otherwise commercializing. This was especially true since the items in question were sweaters in different sizes with different prints within one size.
The District Court of The Hague therefore held that it had not been established that Mr. Aslan infringed Off-White’s trade mark rights and the matter was subsequently appealed to the Court of Appeal of The Hague.
Appeal before the Court of Appeal of The Hague
In so far as concerned the question of liability on part of Mr. Aslan, things took a sudden turn before the Court of Appeal. Mr. Aslan stated at an oral heading in April 2024 that he was now of the opinion that he had infringed Off-White’s trade mark rights through the importation of the counterfeit goods in 2022.
The Court of Appeal of The Hague thus annulled the District Court’s judgment and declared that Mr. Aslan had infringed the marks in question and ordered each party to bear its own costs.
Comment